The difference between Infringement and Passing Off of a trademark are given below:

Infringement

Passing off

Statutory remedy

Common Law remedy

Registration of trademark is required

Registration of trademark is not a pre-requisite

Plaintiff is only required to establish that infringing mark is deceptively similar to the registered mark in respect of similar goods / services and no further proof is required afterwards as there is presumption of confusion

Plaintiff is not only required to establish deceptive similarity of two contesting mark but also require to prove deception or confusion among public and likelihood of injury to the plaintiff's goodwill

Prosecution under Criminal remedies is easier

Prosecution under Criminal remedies is relatively harder

Benefit of instituting the suit under Section 134 of the Trade Marks Act, 1999 is available wherein the registered proprietor or registered user of the trademark can institute the suit where they actually and voluntarily resides or carries on business or personally work for gain

Such benefit is not available and the regular rules of jurisdiction provided under Section 20 of Civil Procedure Code, 1908 apply i.e. Passing off action has to be filed where the Defendant resides or carried on business or cause of actions has arisen.

An action for Infringement for registered trademark or tort of Passing off for both registered as well as unregistered trademark are essentially two ways of achieving the same objective i.e. protection of goodwill attached with a mark. In India a combined action for infringement and passing off is permissible. However, both are technically two different concepts and the difference between the two is highlighted above.

Jurisdiction while filing suit for Infringement or Passing Off in India:

How to decide where to file a suit for infringement or passing should be filed in India?

One of the most important practical benefit given under Section 134 of the Trade Marks Act, 1999 is that a suit for infringement can also be instituted before a District Court / High Court (enjoying Ordinary Original Civil jurisdiction such as High Court of Delhi, Bombay, Calcutta or Madras), within the local limits of whose jurisdiction, at the time of the institution of the suit, the person instituting the suit, actually and voluntarily resides or carries on business or personally work for gain. The person includes the registered proprietor and the registered user.

On the other hand the suit for passing off can only be instituted before a District Court, within the local limits of whose jurisdiction;

The Defendant is residing, working for gain or carrying on its business; or

Cause of action has arisen

Remedies against Infringement and Passing off of a Trademark in India:

Both Civil and Criminal remedies are available in the Infringement or Passing off action.

Under Section 135 of the Trade Marks Act, 1999, the court grant relief in any suits for infringement or for passing off for injunction; either damages or an account of profits together with or without an order for delivery up of the infringing labels and marks for destruction or erasure.
Criminal Prosecution of infringers of trademark is also provided under Trade Marks Act, 1999. Criminal Prosecution of person infringing an un-registered mark is also available under various provisions of Indian Penal Code, 1860. However, it pertinent to note that the Criminal Prosecution of an infringer under Trade Marks Act, 1999 is much easier and effective then Criminal Prosecution of a persons infringing an un registered mark under relevant provisions of Indian Penal Code, 1908.

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